everything you need to know about electronic discovery · everything you need to know about...
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INTERNATIONAL TRADEMARK ASSOCIATION
Everything You Need To Know About Electronic Discovery
Trademark Administrator’s ConferenceOctober 3-5, 2010
By: Rachel Zimmerman and Heidi Belongia
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INTERNATIONAL TRADEMARK ASSOCIATION
Meet the Panel• Elizabeth E. Gouthro
– Trade-mark Agent, Fasken Martineau DuMoulin LLP (Canada)
• Rachel K. Zimmerman– Partner, Merchant & Gould P.C.
• Heidi L. Belongia– Senior Counsel, Foley & Lardner LLP
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INTERNATIONAL TRADEMARK ASSOCIATION
The Setup
• Fast Follower makes a wide variety of consumer snack food products.
• The hot new area is snack foods targeted at teenagers and young adults (ages 15-25).
• Next New Thing, just introduced a new snack (CHEESY POOFS) being promoted in connection with “SouthPark” on Comedy Central.
• In order to compete, Fast Follower developed a new product (CHEESE PUFFS) that looks a lot like the competition.
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INTERNATIONAL TRADEMARK ASSOCIATION
The Setup: CHEESY POOFS v. CHEESE PUFFS
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INTERNATIONAL TRADEMARK ASSOCIATION
The Setup: Timeline of Events• June 15, 2010: Fast Follower begins advertising and preparing for the
launch of CHEESE PUFFS
• July 15, 2010: Planned launch of CHEEESE PUFFS
• July 16, 2010: Next New Thing files a complaint and motion for a preliminary injunction to stop the launch and sale of CHEESE PUFFS
– Complaint alleges federal trademark infringement, trade dress infringement, and unfair competition along with related state law claims
• August/September 2010: Briefing and expedited discovery in preparation for the preliminary injunction hearing
• October 5, 2010: Preliminary Injunction Hearing
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INTERNATIONAL TRADEMARK ASSOCIATION
What Now?• The attorney you are working with asks for your
assistance on handling Fast Follower’s expedited discovery.
• We must preserve, identify, collect, review, and produce relevant and responsive electronically stored information (“ESI”).
• Where do we start?
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INTERNATIONAL TRADEMARK ASSOCIATION
Document Retention Policies• Should Fast Follower have a written
document retention and/or destruction policy?
• If Fast Follower implements a document retention policy, what should it keep in mind?
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INTERNATIONAL TRADEMARK ASSOCIATION
Litigation Hold• Fast Follower has been sued by Next New
Thing – what happens now?• What are the key aspects of a litigation
hold?• What triggers the need for a litigation
hold?
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What is ESI?• What is included within the definition of
ESI?• Where should we look for Fast Follower’s
ESI?• Are all of these categories fair game for
Next New Thing’s expedited discovery requests?
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Legal Obligations• What are Fast Follower’s legal obligations
with respect to ESI?
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INTERNATIONAL TRADEMARK ASSOCIATION
Identifying ESI• What is the best way for Fast Follower to
identify its ESI?• Why are document custodians important?
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Collecting ESI• How should Fast Follower collect its ESI?• What can an e-discovery vendor do to
assist Fast Follower?• What key issues are important to keep in
mind when collecting ESI?
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INTERNATIONAL TRADEMARK ASSOCIATION
Searching ESI• We have identified and collected Fast
Follower’s ESI. What now?• How are search terms developed and
used?• What are some of the pitfalls to avoid with
search terms?
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Reviewing ESI• What format is best for reviewing ESI?• What is the difference between a “native”
file and a .TIFF file?• What are “tags” and why are they helpful?
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Producing ESI• What is the best format for producing ESI?• Should Fast Follower discuss production
format with Next New Thing? • What are the pitfalls to avoid in production
of ESI?– For example: Metadata
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INTERNATIONAL TRADEMARK ASSOCIATION
Third-Party ESI• What if Fast Follower needs ESI from third-
parties to defend against Next New Things’ trademark claims?
• Can Fast Follower obtain and use third-party ESI?– For example: Google, Yahoo, eBay, domain name
registrars
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INTERNATIONAL TRADEMARK ASSOCIATION
Practical Tips & Takeaways
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Questions?